To Register or not to Register; that is the Trademark Question.

Many people ask, “Should I trademark my [insert name, logo, whatever, here]?”  If you start typing that phrase into Google, it will autofill a huge variety of things people might want to trademark.  I’m going to answer this question in pretty generic terms so that it might apply to a wide range of people who want an answer to this question because the considerations and the filing process is similar even if the type of business is not.  First, I’m going to talk a little bit about what a trademark is and what it is not.  Then I’m going to talk about trademark registration, both federal and state, and what you can and cannot get from registration.  Buckle in, this is going to be a long article, but hopefully it help you determine whether you should register your trademark.  A well-crafted and well-tended trademark can be one of your company’s most important assets and is not something to be taken lightly.

First, a very small technicality.  There are two kinds of marks people mean when they say “trademark.”  There are trademarks and service marks.  The difference is quite simple: a trademark is any mark used in connection with the trade of goods whereas a service mark is any mark used in connection with a service.  So if you are making and selling a work of art, your mark is a trademark.  If you are making songs and selling tickets to your shows, your mark is a service mark.  So why the difference, what does it mean?  Practically speaking, nothing.  The registration process is the same, the protections are the same, and, sometimes, a mark can be both a trademark and a service mark.  I’m really only brining this point up for the sake of completeness and to say that I’m going to refer to both trademarks and service marks as “trademarks” for the purposes of this article and I’m done, so, moving on!

A trademark is a word, phrase, logo, or other thing that identifies the source of goods or services.  Take a minute to reread that, it’s packed with meaning.  I’m going to deconstruct that sentence to figure out what a trademark really is and why they work the way they do.

 

Distinctiveness

Almost any word, phrase, logo or thing can identify a source, but not every word, phrase, logo, or thing can.  If you are starting a new business that makes and sells shoes and you call your company “Shoes,” you are going to have a difficult time getting people to recognize who makes the shoes you are selling.  Imagine being a shoe customer and they see a box of your shoes and it just says “Shoes” on it.  No logo, no fancy font or graphic design work.  Black text on a white back ground, like this article.  That customer has no way of knowing that “Shoes” is supposed to refer to your company.  As far as they know, “Shoes” merely signifies that there are shoes in the box.  This brings us to the first important consideration:  is your mark distinctive?

In order to identify your company as a source, your mark has to be distinctive enough to let consumers know that your company is that source.  Words, phrases, and logos can be inherently distinctive, capable of becoming distinctive, or indistinctive.

The “Shoes” mark discussed above is indistinctive, there is no way for an average consumer to associate it with any particular shoe maker.  Such marks are called generic marks, cannot ever serve as trademarks, and get no trademark protections at all.  Interestingly, some marks can become generic and lose their trademark protection.  Aspirin, thermos, and escalator are all words that, at one time, were registered trademarks.  People used those trademarks to refer to the actual goods so often that the word no longer identified the source of the good; instead it just identified the good itself. 

Marks that are capable of becoming distinctive are called descriptive marks.  “New Orleans Shoes” could be a descriptive mark for a New Orleans based shoe company.  Descriptive marks are only protectable as trademarks if they actually become distinctive.  It needs to become distinctive so that consumers can actually use that mark to identify your company.  There may be many shoe companies in New Orleans so calling your company New Orleans Shoes doesn't necessarily distinguish your shoe company from any other shoe company in New Orleans.  A descriptive mark becomes distinctive when it obtains what is called “secondary meaning.”  The secondary meaning concept is about marketplace recognition.  How many shoe consumers know that “New Orleans Shoes” refers to your particular company and the goods it produces?  If New Orleans Shoes is a new company, it won’t have much recognition at all, and thus its mark won’t have any secondary meaning and will not be protectable.  The longer New Orleans Shoes is around and selling shoes, spending money on advertising, becoming part of consumers’ shoe consciousness, the more likely it is to acquire secondary meaning. 

Names may or may not be trademarkable.  You generally cannot trademark your last name.  The US Patent and Trademark Office (USPTO) considers surnames to be generic.  Your full name or your last name in conjunction with something else (like Smith Shoes) are considered descriptive marks.

There are three kinds of marks that are inherently distinctive: suggestive marks, arbitrary marks, and fanciful marks.  Suggestive marks are those that require the consumer to make some mental leap to connect the mark to the good.  For example, if you call your shoe company “Fast Foot,” the consumer has to connect the dots to know that the mark refers to shoes.  I know what you’re probably thinking.  I never said it had to be a big mental leap…  In fact, most trademark litigation concerns whether a given mark is really suggestive, or whether it’s actually descriptive (another big segment of trademark litigation concerns whether a mark is descriptive or generic).

Arbitrary marks are those that are, well, used arbitrarily.  Arbitrary marks have some meaning, but their use as a mark does not relate to its normal meaning.  Like using “Shoes” as a mark for a computer company or using “Boudin” for a shoe company.

Lastly, there are fanciful marks.  These are totally made up and have no meaning beyond their use as a mark.  “ASLDKFJAS;D” used for a shoe company (or any company, for that matter) is a fanciful mark.

So there you have it.  Marks are either generic, descriptive, suggestive, arbitrary, or fanciful.  The protection afforded to each is different, with generic marks receiving no protection and fanciful marks receiving the most protection.  There is a sort of obvious tension going on here between marketablilty, on one hand, and protectability on the other.  When consumers are looking for a particular good or service, they are looking for words they associate with that good or service.  So if you use a descriptive name for your company, consumers will have an easier time finding you than if you go with ASLDKFJAS;D, but of course, your descriptive name isn’t as strong as the fanciful one.  Because of this tension, most companies try to shoot for a suggestive mark.  This really isn't as easy as it sounds, though.  If only there was a bright line between descriptive marks and suggestive ones, but as I said, a huge bulk of trademark litigation concerns the descriptive/suggestive divide. 

What you need to take away from this section: You need to make sure your mark is distinctive before you file it.  It can either be inherently distinctive or it must have gained secondary meaning through marketplace recognition.  This means that if your mark is descriptive, you can’t register it until you have used it long enough to gain that recognition.  When you are choosing your mark you need to consider its distinctiveness and how that plays into your marketing strategy.  How much will it cost to gain secondary meaning?  How much will it cost to promote a fanciful mark?

 

Use in Commerce

Trademark protection in the US depends on how it is used, and it must be used in commerce.  It’s hard to identify a source of goods or services if you aren’t actually providing goods or services or using your trademark in conjunction with your goods or services.  Registration is not use; if you register a mark and then don’t use it or stop using it, your mark will not be protected.  How a trademark is used is just as important as what is used for the trademark: when it is used, what good or services is it used with, and where it is used. 

It should come as no big surprise that the first company to use a mark gets superior rights and protection over someone who uses it later.  This is true even if the second user registers the mark before the first user.  I’ll discuss the ramifications of this in more detail in the registration section below but I want to point out an interesting quirk about first to use.  Let’s say two different people have the DJ name “DJ Beatz” (a descriptive trademark).  Person A may have come up with the name first and been the first to use it in commerce (which would be a record or performance or something).  But let’s say that Person A only does one show a year and only releases an album every five years.  Person B could start using the name later but do a show every week at the same club, pump out the albums, and get their name plastered all over town and in so doing DJ Beatz gets secondary meaning because music consumers associate that name with Person B.  Thus, even though Person B used the name later, they are the one who gets a protectable trademark because they put in the time and effort to make the mark distinctive.

Trademark rights are specific to the good or service.  This means that the same mark can be used by different companies to mark different goods or services.  You could have Awesome Opossum taxidermy (a suggestive mark) and Awesome Opossum record company (an arbitrary mark) and so long as the average consumer wouldn’t confuse the two, there is no infringement.  The closer the businesses are to competing with each other, the more likely there will be infringement, because consumers are more likely to be confused.  Consider: Awesome Opossum pet store and Awesome Opossum pet boarding.  It is possible that the services or goods provided by each of those companies overlap.  I can drop off Fido at Awesome Opossum pet boarding, buy a thing of dog treats they have at the counter, and tell someone how awesome Awesome Opossum’s dog treats are.  But how is that person supposed to know which Awesome Opossum I’m talking about? 

Lastly, trademarks are geographic.  Awesome Opossum pet store in New Orleans wouldn’t necessarily conflict with the separately owned Awesome Opossum pet store in New York because the consumers in each city probably aren’t going to confuse the two stores.  The closer the stores, the more likely one is to infringe on the other.  Awesome Opossum in New Orleans probably conflicts with Awesome Opossum in Metairie.  If you are an ambitious business owner, you want your business to grow!  Your local business might grow large enough to spread across the country.  The owner of Awesome Opossum in New Orleans could open up a store in Metairie, then Biloxi, then Atlanta, then Philadelphia, and at some point it’s going to start encroaching on the New York store’s turf.  At that point (which will most certainly be a lawsuit) the New Orleans store will have to do business under a different name in the New York area to avoid infringing on the New York store’s trademark.

Why do trademarks work like this?  Well, think about how the consumer interacts with companies.  The more likely a consumer is to be confused by two marks, the more likely one mark will infringe on the other.  Trademark law is almost entirely concerned with how the consumer actually views the mark or marks.  The mark owner can only do so much to influence the consumer, but at the end of the day, with trademark law, the customer is always right.

What you need to take away from this section: A big part of trademark registration is the search (if you don’t know what I’m talking about, that must mean you have just started researching trademarks; Google is your friend).  The more you can differentiate your mark from those across the country, the easier it will be to register, the stronger of a mark it will be, and the fewer potential problems you will have in the future.

 

Confusion

I’ve mentioned “protection” and “strong” and “weak” marks a few times so far, but what do I mean by these terms?  Well, to understand that, I need to tell you what infringement is.  A person infringes on a trademark owner’s mark when the person’s use of the owner’s mark in commerce would likely confuse consumers as to the source of a good or service.  A mark has more protection when it is more distinct.  This is because there are going to be many similar sounding descriptive or suggestive businesses.  NOLA Coffee and NOLA Café, two descriptive marks for coffee shops, might not infringe on one another.  However NOLA Coffee and NOLA Café, two arbitrary marks for software companies, are similar enough that consumers might think the two are actually one company, which means that someone is infringing.  Essentially, “protection” means legal recognition of your mark as a valid trademark.  Stronger mark = easier recognition.

If you’ve gotten this far and think I’m splitting hairs, you aren’t wrong.  But these can be important hairs!  Think about how many firms out there provide branding and marketing services.  Your trademarks are your identity, they are expensive to make and maintain, they represent your company’s goodwill, and thus, it’s important to treat them right.  And everyone thinks that their marks are important so the law has to split hairs; it’s a crowded table.

And at this crowded table you have a very important job as a trademark owner.  You must police your mark and make sure your mark has elbow room.  This means that you are on the hunt for potential infringers.  You have to send cease and desist letters and, perhaps, file law suits against infringers.  No one is going to stop someone infringing on your marks except for you.  Policing a strong mark is easier than policing a weak mark because you have more legal protection.  Policing your mark is how you maintain consumer identification of your mark with your goods and services.  If you start your mark with common words or phrases, you are already paddling against the current.  “Awesome Opossum” is actually a pretty bad mark to use, even you use it arbitrarily because it’s a common phrase.  Go ahead and google it.  All those people making “Awesome Opossum” stuff would not be infringing on your mark.  The more unique your mark is to your business, the easier it is to police.  If no one had ever used the phrase “Awesome Opossum” then you would be able to prevent all those Awesome Opossum t-shirts.  If you have a trademark that’s worth anything, you will spend money policing it. 

What you need to take away from this section: How easily can consumers be confused by a similar mark?  The easier it is to infringe, the stronger your mark is, the more recognition your mark will get and the easier and cheaper it will be to police your mark.  You can police NOLA Café the coffee shop but it will be harder and cost you more (because potential infringers will resist more) than if you went with Salubrious Brew (a suggestive mark).

 

Federal Registration

Registration!  Congratulations on making it this far!  I hope by now you have some idea about how strong your mark is, what it means to own a trademark, and whether you feel ready to go ahead with the registration process. 

As I said before, registration does not mean protection.  You can have a registered trademark that infringes on someone else’s mark.  Federal registration is not a substitute for a well-crafted trademark.  It is a booster for a well-crafted trademark.  Again, you don’t register your mark to obtain trademark rights, you obtain the rights through use of your mark. 

There are two kinds of registrations: those on the principle register and those on the supplemental register.  Listing on the principle register grants the most benefits to a trademark holder.  The supplemental register is reserved for descriptive marks that have not yet obtained secondary meaning.  Typically, supplemental registration is offered to marks that fail to qualify for principle registration.  If your mark is on the supplemental register, you have to refile the registration to get on the principle register.  The supplemental register allows the mark holder to:

  • Use the ® symbol to ward off potential infringers;
  • Register the mark in foreign countries that have trademark reciprocity; and
  • Receive injunctive relief (an order to stop infringers from infringing), money damages, treble damages (a money damages multiplier that is not used often), and any profits the defendant may have obtained by using the trademark, if the owner of the mark wins an infringement lawsuit.

In addition to the benefits above, the principle register grants the mark holder:

  • Nationwide constructive notice of trademark ownership to others;
  • Nationwide presumption of trademark validity;
  • Nationwide trademark rights;
  • The right to sue in federal court (otherwise you must have more than $75,000 in controversy);
  • The ability to file for incontestability after five years (this prevents people from saying your mark does not have secondary meaning, is too similar to another mark, or is functional); and
  • The ability to have US Customs Service prevent importation of infringing goods.

You can file based on an intent to use (ITU) if you have not already used the mark in commerce.  This registration will not place you on the principle register until you file a supplementary registration showing that you are actually using the mark.  The primary benefit ITU offers is that it serves as your first use of the mark.  So if you have a hot mark that you think people will try to use, filing ITU can save your spot at the head of the line.

 

Louisiana Registration

Federal registration is what most people think of when they talk about trademark registration, but there are also state trademark registrations, though they offer very little real protection.

Like federal registration, state registration does not create a trademark.  Trademarks can only ever be created through use, of a distinctive mark, that identifies the source of goods or services.

You can register trademarks in Louisiana with the Secretary of State.  The primary benefit you get by becoming listed is that you would show up in other business’s trademark searches.  This could help avoid unintentional infringements, but little else.  Furthermore, Louisiana registration is only good statewide.  If you operate in any other state, Louisiana registration wouldn’t help you at all.

 

Conclusion

So, should you register your trademark?  Well, is your mark distinctive?  Is it dissimilar enough from other marks?  Are you using it in commerce?  If your mark fits all three of these, then yes, you should register your mark. 

Regardless of where you are in the process of creating and using your mark, you must consider each of those three aspects carefully.  You don't want to invest too much time and money on an unregisterable generic mark or one confusingly similar to another mark.

Thanks for reading, I hope this article has helped point you in the right direction with your trademark!